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The Supreme Court recently handed down its opinion in KSR
International v. Teleflex. The matter involved an adjustable pedal system for
cars, which allows drivers to adjust the position of the gas and brake pedals
themselves. KSR developed a model adjustable pedal and was selected by General
Motors Corporation to supply the parts. Teleflex, who had previously registered
a license for “a position-adjustable pedal assembly with an electronic pedal
position sensor attached a fixed pivot point,” sued for patent infringement
under § 103 of the Patent Act. That section provides:
“the differences between the subject matter sought to be
patented and the prior art are such that the subject matter as a whole would
have been obvious at the time the invention was made to a person having
ordinary skill in the art.” 35 USC 103
The Supreme Court, reviewing the matter on appeal from the
Federal Circuit, found that the inferior court had examined Teleflex’s claim in
a manner that was “too rigid.” The Supreme Court found that if a person of
ordinary skill in the art can implement a predictable variation, and the
benefit of the variation is also apparent, §103 will bar its patentability.
The Court held that the “proper question was whether a . . .
designer of ordinary skill in the art, facing the wide range of needs created
by developments in the field, would have seen an obvious benefit to upgrading”
the pedal.
Several important principles can be found in this opinion.
First, it is worth noting that this opinion was unanimous, with all members of
the Court agreeing with the outcome in the case. Unanimous opinions help to
convey the message that “this is the way it’s going to be,” and are typically
less likely to be subject to future challenges. Second, the Court clearly
implied that intellectual property litigation based on mere minor improvements
would not be viewed favorably.
Of course, this interpretation also indicates that the
number of patents initially granted to those who apply for protections will
likely fall. Applications for minor improvements on an existing invention will
now be examined with a vengeful eye. The question remains: how does one determine “obvious?” The
Supreme Court offered some guidance:
“One of the ways in which a patent’s subject matter can be proved
obvious is by noting that there existed at the time of invention a known
problem for which there was an obvious solution encompassed by the patent’s
claims.”
A hypothetical example is as follows. A refrigerator, a
patented idea, suffers from being dark when being opened for purposes of
preparing a late night snack. The late night snacker has the idea of placing an
automatic light switch in the refrigerator, to be activated when opened and
shut, and obtains a patent for the idea. When a manufacturer also installs its
own version of the automatic light switch, the patent holder sues. The patent
holder can expect to lose this battle. There was an obvious problem at the time
of the light switch patent: it was dark in the refrigerator. The problem was
obvious at the time of the patent. The manufacturer’s version of the light will
likely not be liable for infringement because, as the Supreme Court notes:
“Common sense teaches . . . that familiar items may have obvious uses
beyond their primary purposes, and in many cases a person of ordinary skill
will be able to fit the teachings of multiple patents together like pieces of a
puzzle.”
The fact that the snacker had the idea first is of no matter
because familiar items, such as a light and a simple sensor, and the obvious need to see the food in the fridge, led to the
eventual improvement.
Bottom Line: The message is clear: minor
improvements that fail to offer relatively significant new ideals should not be
granted protection. Those that have already been granted are skating on the proverbial
thin ice of intellectual property rights.
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